Appeal 2007-1144
Application 10/424,616
(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”). Because they use open
claim language, the claims do not exclude the additional ingredients in
Bernstein’s composition.
Moreover, “the law does not require that the references be combined
for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); see also KSR, 127 S. Ct. at
____, 82 USPQ2d at 1397 (“In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”).
Thus, claims 13-16 are not rendered unobvious by the fact that one of
ordinary skill would have added cholesterol sulfate to Miklean’s tanning
product for the moisturizing effect predicted from Bernstein’s disclosure,
rather than Appellants’ stated purpose of improving retention of an artificial
tan.
Appellants also argue that any prima facie case of obviousness “is
rebutted due to the surprising results of the present invention. Appellants
have found that cholesterol sulfate can cause the stratum corneum to be
sloughed off more slowly, and therefore, can improve the retention of the
self-tan” (Br. 10). Appellants urge that neither of the cited references
“suggest this property of cholesterol sulfate, or more importantly, its effect
in combination with a self-tanning agent” (id.).
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